DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 4-5, 10-12, 34, 38 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lu et al. (WO1996011290A1).
Regarding Claims 1-2, 4-5, 10, 12, 34 and 38, Lu teaches a composition for contacting metal substrate surfaces (abstract) (reading on claims 34 and 38-39) comprising at least cerium nitrate (a first lanthanide series metal) and one or more of gadolinium or lanthanum nitrate (second or third lanthanide series metals) Table II, where all solutions had a pH of 1.32 and did not contain peroxide or Zr or Zn or copper (Table II)
Regarding Claims 8 and 11, Lu teaches a composition of 0.1 M of lanthanum nitrate (first lanthanide series metal) and 0.3 M cerium nitrate (a second La-series metal) with a pH of 1.32 (Table II); 0.1 M of Lanthanum nitrate contains around 13,900 ppm of La, reading on the claimed range of 5-25,000 ppm.
Regarding Claim 39, the prior art is silent regarding the scribe creep property, however, one of ordinary skill in the art would expect the prior art substrate to have similar scribe creep on a substrate compared to a substrate of contacted with lanthanide series metal and an oxidizing agent under the expectation that similar products have similar properties. (See MPEP 2112.01(I))
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (WO1996011290A1) in view of Ikeda (US4992115).
Regarding Claims 9, Lu teaches a salt of cerium such as cerium nitrate may be used (See Claim 18) but is silent regarding the starting salt containing ammonium. However, Ikeda teaches a method of surface treatment of metal with a composition comprising cerium (abstract), and teaches the source of cerium ion may be ammonium cerium [IV] nitrate (Col. 3, Lines 24-25); therefore, one of ordinary skill in the art would have been motivated to use ammonium cerium nitrate as a source of cerium nitrate for the purpose of forming cerium nitrate in solution, this is considered to produce both nitrate ions and ammonium ions in solution as well as at least some ammonium nitrate salt as a result.
Claim(s) 1, 8, 12-13, 15, 19, 23-24, 26 and 34-35, 38-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greene et al. (US7402214B2).
Regarding Claims 1, 8, 12-13, 15, 19, 23-24, 26, 34-35 and 38, Greene teaches a system for treating a metal substrate with the first and second compositions (as required by claims 34-35 and 38) comprising:
A solution comprising a rate earth metal such as cerium nitrate (a first lanthanide series metal) and a second composition group IVB complex metal fluoride (an electropositive metal) (See Col. 8, Lines 30-40); (No peroxide or copper is taught to be present) where the metal has a concentration of 990 ppm (See Col. 31, Lines 45-50) reading on claims 19 and 23-24 and 26 as these claims further limit option embodiment of the third composition
Greene teaches the pH may be acidic (less than 7) (Col. 8, lines 19-22) which encompasses the claimed range of a pH of less than 2, in the case where a claimed range lies inside of a range taught by the prior art, a prima facie case of obviousness exists. (See MPEP 2144.05(I)).
Where Ce can be present in a range of 50-5000 ppm (Col. 8, Lines 19-20), reading on the claimed range of 5-25000 ppm
Regarding Claim 39, the prior art is silent regarding the scribe creep property, however, one of ordinary skill in the art would expect the prior art substrate to have similar scribe creep on a substrate compared to a substrate of contacted with lanthanide series metal and an oxidizing agent under the expectation that similar products have similar properties. (See MPEP 2112.01(I))
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Greene et al. (US7402214B2) in view of Ikeda (US4992115).
Regarding Claims 14, Greene is silent regarding free fluoride concentration in the conversion coating solution. However, Ikeda teaches a method of surface treatment of metal with a composition comprising cerium (abstract) and teaches the surface treatment may comprise 1-50 ppm of free fluorine ion for the purpose of balancing etching reaction of aluminum to form a conversion coating but not too high in that the metal etching rate is higher than coating forming rate (Col. 4, Lines 1-10); therefore, one of ordinary skill in the art would have been motivated to ensure free fluorine ions in solution for the purpose of improving the forming of the conversion coating on the metal substrate.
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/RICARDO D MORALES/Examiner, Art Unit 1738